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Optimizing Patent Applications: Drafting to Withstand Challenge - IPWatchdog.com | Patents & Patent Law

Optimizing Patent Applications: Drafting to Withstand Challenge

By Gene Quinn
April 17, 2017

Drafting patent applications can be a daunting task, particularly today where virtually every commercially valuable patent will likely be challenged at the Patent Trial and Appeal Board (PTAB).

But challenges at the PTAB presuppose that the patent has issued though, and the first challenge many applications will face will be heighted patent eligibility hurdles just to escape the Patent Office. Of course, under the Supreme Court’s Alice/Mayo framework it is possible for computer implemented inventions to be found not to be abstract, although it seems more likely that such inventions will survive 101 scrutiny, if at all, because there is something significantly more added to the claims. Of course, that something significantly more requires a thorough and highly detailed technical description of the invention and the various aspects of the invention, which is realistically the only way to survive the search for the inventive concept under Alice/Mayo Step 2B. See Defining Computer Implemented Inventions post-Alice.

It is now more true than ever that patent drafters must treat every invention as the million dollar, or billion dollar, invention from the very start. The reason for this is simple: By the time you realize the invention will be a huge commercial success and the patent application warrants that level of attention it will be too late to do anything unless a proper foundation of a solid patent application has already been laid from the earliest stages. This means an extraordinarily detailed specification, it means thoughtful application of as much known prior art as possible, and it means checking and cross-checking to make sure that initial filing is as complete and error-free as possible.

Join me for a free webinar discussion – Optimizing Patent Applications: Drafting to Withstand Challenge – on April 19, 2017, at 2pm ET. Joining me will be Joseph Root, author of Rules of Patent Drafting: Guidelines from Federal Circuit Case Law. In addition to taking as many questions as possible from the audience we will discuss:

  • Best practices writing to overcome Alice-based 101 rejections.
  • Identifying the invention/improvement versus KSR 103 concerns.
  • Best practices for ensuring a complete and thorough specification.
  • Nautilus, means-plus-function and other 112 matters.

CHERE HERE to REGISTER.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 2 Comments comments.

  1. Sow April 20, 2017 11:16 pm

    I joined this event but there were techincal issues. Was there a recording of the event or will there be a replay?

  2. Gene Quinn April 21, 2017 11:36 am

    Sow-

    You should receive information via e0mail about how to access the webinar once it is loaded and available. Thanks.

    -Gene